Spotlight on Upcoming Oral Arguments – August 2017

Tuesday, August 8, 2017

EmeraChem Holdings v. Volkswagen Group of America, No. 16-2619, Courtroom 201

In this appeal from the PTAB, the Court will decide whether the Board erred in adopting a claim construction in its Final Written Decision that differed from the claim construction explicitly adopted in its Institution Decision. EmeraChem argues that the Board’s “change of theory midstream” deprived it of notice and an opportunity to address the new claim construction. Volkswagen argues that there is no fixed deadline by which a claim term must be finally construed. Volkswagen further argues that the Institution Decision signaled that the Board’s construction could potentially change since EmeraChem did address Volkswagen’s claim construction in its Preliminary Response.

Royal Crown Company v. The Coca-Cola Company, No. 16-2375, Courtroom 402

In this appeal from the TTAB, the Federal Circuit will determine whether Coca-Cola’s mark “ZERO” deprives other companies of the right to use the term descriptively.  Royal Crown argues that “zero” is a generic term used in the beverage industry to refer to calorie count and has not acquired the distinctiveness necessary to establish the generic term as a trademark.  Coca-Cola argues that “zero” has acquired distinctiveness when used as part of the name of a soft or sports drink, and is associated by consumers with Coca-Cola’s products.

CardiAQ Valve Technologies v. Neovasc, No. 17-1302, Courtroom 402

This appeal arises from a District of Massachusetts jury verdict finding Neovasc liable for misappropriation of three trade secrets and denial of Neovasc’s motion for a new trial. Neovasc argues that it cannot be liable for trade secret misappropriation because CardiAQ has failed to identify a protectable trade secret under Massachusetts law. CardiAQ argues that it identified the trade secrets with sufficient detail, and presented sufficient evidence to support the jury’s finding of misappropriation.

UCB, Inc. v. Accord Healthcare, No. 16-2610, Courtroom 203

Accord appeals a District of Delaware decision finding that the asserted claims were patentably distinct and thus not invalid for obviousness-type double patenting. Accord argues that the claimed compound was obvious because the prior art “expressed a preference” for benzyl and methyl R and R1 groups, and because the claimed compound, in Accord’s view, does not exhibit unexpected properties over the prior art patent. UCB argues that the prior art patent is a genus covering millions of compounds, and that a person of ordinary skill in the art would not have been motivated nor have had a reasonable expectation of success in adding the particular substituents to arrive at the claimed compound.

Wednesday, August 9, 2017

DSS Technology Management v. Apple, Inc., No. 16-2523, Courtroom 201

In this appeal from the PTAB, the Federal Circuit will determine whether the Board improperly shifted the burden to DSS to prove patentability.  DSS argues that the Board improperly shifted the burden to DSS to provide evidence that a redesign of the prior art data network systems would have been “uniquely difficult or challenging.”  Apple argues that the burden to prove unpatentability remained with Apple throughout the PTAB proceedings, and that the Board’s statement was merely a comment on the simplicity of the modification to the prior art design.

Friday, August 11, 2017

Idemitsu Kosan Co. v. SFC Co., No. 16-2721, Courtroom 201

In this appeal from the PTAB, the Federal Circuit will determine whether the Board violated the APA by basing its patentability determination on arguments first raised during the oral hearing.  Idemitsu argues that it was not afforded an adequate opportunity to respond to the factual and legal bases first presented during SFC’s rebuttal argument during the oral hearing. SFC argues that the bases for the Board’s finding of unpatentability were outlined in SFC’s original petition, and therefore Idemitsu did have adequate notice and an opportunity to respond.

*Kate Leonard is a Summer Associate at Finnegan.